WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Educational Testing Service v. Atak Teknoloji Ltd. Sti. Case No. D2010-0479 1. The Parties
The Complainant is Educational Testing Service of Princeton, New Jersey, United States of America, represented by Dorsey & Whitney LLP, United States of America.
The Respondent is Atak Teknoloji Ltd. Sti. of Kocaeli, Turkey. 2. The Domain Names and Registrar
The disputed domain names and are registered with 1API GmbH. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2010. On March 30, 2010, the Center transmitted by email to 1API GmbH a request for registrar verification in connection with the disputed domain names. On April 2, 2010, 1API GmbH transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 3, 2010.
The Center appointed Kaya Köklü as the sole panelist in this matter on May 12, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
The date scheduled for the issuance of the Panel's decision was May 26, 2010.
In accordance with the Rules, paragraph 11, and since the Parties have not agreed otherwise, the language of the administrative proceedings is the language of the Registration Agreement (i.e., English).
On June 10, 2010, in response to a Panel Order sent to the Parties on June 8, 2010, the Complainant requested that its requested remedy be amended to that of cancellation (in lieu of the originally requested transfer of the disputed domain names) in light of the possible existence of trademark rights owned by third parties not participating in the present dispute but which may relate to the disputed domain names. 4. Factual Background
The Complainant is a not-for-profit educational research and measurement institution providing worldwide educational testing, measurement and research. It was founded on December 19, 1947.
One of the widely known tests developed and administered by the Complainant and its related companies is the TOEFL test. TOEFL stands for “Test of English as a Foreign Language”. This test is used for the evaluating the English proficiency of people whose native language is not the English language. A lot of colleges and universities in the United States of America and Canada require TOEFL test scores from their international applicants.
According to Complaint Annex 3, the TOEFL test is in use since about February 1964. Since then, several million students worldwide have taken the TOEFL test in more than 100 countries, including Turkey.
As evidenced by Complaint Annexes 4 and 5, the Complainant is the registered owner of several TOEFL trademarks, including but not limited to trademarks registered in the United States, in the European Union and in Turkey.
Furthermore, the Complainant holds and operates wibsites under , , , , , and , each of them referring to the Complainant's main homepage .
According to Complaint Annex 1, the disputed domain names were created on January 6, 2009 and are registered in the name of the Respondent.
The Respondent is a company with its registered seat in Kocaeli, Turkey.
As evidenced by Complaint Annex 8, educational English language services were provided under the disputed domain names. However, when the Panel visited the disputed domain names on May 23, 2010, there was no content provided under these domain names anymore. 5. Parties' Contentions A. Complainant
The Complainant argues that it is the largest private not-for-profit educational research and measurement institution in the world. It alleges that it develops, administers and scores more than 50 million tests annually in more then 180 countries at more than 9.000 locations.
In Turkey, the Complainant states, the TOEFL test is administered in several major cities, including Istanbul, Ankara, Bursa and Izmir.
The Complainant argues that its trademark TOEFL enjoys a worldwide reputation and is renown among educational, professional, occupational, economic, governmental, institutional and industrial sectors.
With its Complaint, the Complainant initially claimed the transfer of the disputed domain names. In response of the Panel Order sent to the Parties on June 8, 2010, the Complainant amended its request and now claims the cancellation of the disputed domain names.
It argues that the disputed domain names are identical or at least confusingly similar to the Complainant's trademarks as they fully incorporate the Complainant's registered TOEFL mark. The Complainant argues that the only difference between the disputed domain names and the Complainant's trademarks is that the disputed domain names combine two different trademarks, including the trademark IELTS of the Complainant's principal competitor.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names and has registered and used the disputed domain names in bad faith.
In this regard, the Complainant states that it never granted a permission or license to the Respondent to use the trademark TOEFL. In addition, the Complainant alleges that the Respondent has never used and does not intend to use the sign TOEFL in connection with a bona fide offering of goods and services.
Finally, it is argued that the Respondent must have known the Complainant's well known trademarks well before the registration of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:
(i) The domain names are identical or confusingly similar to the trademark in which Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has no replied to the Complaint, Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may as appropriate accept the provided factual allegations in the Complaint as true, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
In this regard, it is noted that an independent research by visiting the Internet sites linked to the disputed domain names has been performed by the Panel. In addition, the Panel carried out a non-comprehensive trademark search for the mark IELTS in public registers. The competence of the Panel to perform such independent research is undisputed and in line with previous UDRP decisions, e.g., Hesco Bastion Limited v. The Trading Force Limited, WIPO Case No. D2002-1038. A. Identical or Confusingly Similar
The Panel finds that the disputed domain names and are confusingly similar to the Complainant's trademarks.
First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark right regarding the term TOEFL. As evidenced by the Complaint Annexes 3, 4 and 5, the Complainant owns several TOEFL trademarks registered in various jurisdictions worldwide. Its first trademark was registered in the United States in 1978.
Although not identical, the disputed domain names and fully incorporate the Complainant's trademark TOEFL.
The Panel is aware that the second part of the disputed domain names consists of another registered trademark of a third party. This second part of the disputed domain names comprises the sign IELTS, which is – according to the Panel's independent research in public trademark registers - a registered trademark of the Complainant's competitor in educational testing, namely, The Bachelor Masters & Scholars of the University of Cambridge.
In line with previous UDRP decisions, the Panel finds that the addition of another mark (owned by a person or entity which is not part of the proceedings) does not create a distinct mark or domain name, capable of overcoming a claim of confusingly similarity, Yahoo! Inc. and Overture Services, Inc. v. Registrant (187640), a/k/a Gary Lam, a/k/a Birgit Klosterman, a/k/a XC2, a/k/a Robert Chua, a/k/a Registrant, WIPO Case No. D2004-0896.
In the present case, the Panel believes that the addition of the mark IELTS even increases the potential confusion of the Internet users as to the source, sponsorship and affiliation of the disputed domain names. The disputed domain names are likely to confuse users into their believing that the domain names are affiliated or endorsed by the Complainant or that the use of the disputed domain names are at least authorized by the Complainant. This is in particular the case as the Panel is aware of the notoriety of the Complainant's TOEFL trademarks, in particular as the trademark is widely known also in Turkey, where the Respondent has its registered seat.
Hence, the Panel finds that the disputed domain names are confusingly similar to the Complainant's trademark TOEFL and therefore concludes that the first requirement under paragraph 4(a) of the Policy is fulfilled. B. Rights or Legitimate Interests
The Panel also finds that the Respondent has not demonstrated any right or legitimate interest in the disputed domain names.
While the burden of proof in principle rests with the Complainant, the Panel has recognized that this would result in the impossible task of proving a negative, in particular as requiring the lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel believes that the Complainant is only required to make out a prima facie case in order to meet the requirements in paragraph 4(a)(ii) of the Policy, Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to demonstrate a right or legitimate interest in the disputed domain names according to the Policy, paragraph 4(a)(ii) and 4(c).
With its Complaint, the Complainant has provided non-contested prima facie evidence that the Respondent has no trademark, license or any similar right to use the disputed domain names.
In Complaint Annex 8, the Complainant has provided evidence that the Internet site linked to the disputed domain names was in use as what appeared to be educational English language services for Turkish speaking people. When the Panel visited the disputed domain names on May 23, 2010, there was no content provided anymore. The Panel believes that – upon service of the Complaint – the Respondent has stopped providing educational language services under the disputed domain names. The Panel finds that the omission of offering services under the disputed domain names after the service of the Complaint to the Respondent is an indication that the Respondent itself knows that it has no rights or legitimate interests in using the Complainant's trademark TOEFL. The Panel even finds that the Respondent must have been well aware that users would be mislead by the Internet site linked to the disputed domain names fully incorporating the Complainant's trademark. This is in particular the case as the Complainant's trademark TOEFL is widely known also in Turkey.
In any case, the Respondent has failed to demonstrate one of the three circumstances under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the domain names. In particular, the Respondent has failed to show that the Internet site linked to the disputed domain names has been used in connection with a bona fide offering of goods and services.
There is also no indication that the Respondent has been commonly known by the disputed domain names.
Finally, the Respondent failed to demonstrate that it is making a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain to misleadingly divert users or to tarnish the trademark at issue.
As a conclusion, the Panel finds that the Complainant has satisfied the requirements of 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel is of the opinion that the Respondent has registered and used the disputed domain names in bad faith.
The Panel is well aware of the reputation of the Complainant's educational services. The Panel also recognizes the notoriety of the Complainant's trademarks and it believes that the Respondent must have known of the Complainant's trademark TOEFL when registering the disputed domain names. This is particularly likely as an English language education service was offered under the disputed domain names. It appears that the Respondent has registered the disputed domain names solely for the purpose of creating an association with the Complainant's well known TOEFL tests. The Panel believes that the Respondent has intentionally registered the disputed domain names for use with educational English language services in order to mislead users who may search for official TOEFL test related information provided by the Complainant. The Panel is convinced that the Respondent was aware that a legitimate use of the domain names would not have been possible without infringing the Complainant's trademark rights, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. This assessment is supported by the fact that the Respondent must have known the Complainant's TOEFL trademarks at the time of registration of the disputed domain names, in particular as both disputed domain names have been registered well after the Complainant's TOEFL trademark has become widely known in the world.
In line with previous UDRP decisions, the Panel is of the opinion that the use of the additional trademark IELTS within the disputed domain names does not prevent the risk of misleading consumers who are searching for official information about the TOEFL test, Danisco A/S and Genencor International, Inc. v. Bong-Gyu Jeong, WIPO Case No. D2005-0973.
On the basis of the current record, the Panel cannot conceive of any good faith use of the disputed domain names by the Respondent. The Panel rather finds that the Respondent's failure to respond to the Complaint supports the conclusion that it has registered and used the disputed domain names in bad faith in order to mislead consumers.
In the light of the findings above, the Panel is convinced that the disputed domain names were registered and used in bad faith and that the Complainant has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy. 7. Remedy
As indicated above, the Panel concludes that the Complainant has satisfied all three requirements of Paragraph 4(a) of the Policy.
However, the Panel notes that the domain names and incorporate not only the Complainant's trademark TOEFL but also the trademark IELTS, owned by University of Cambridge, one of Complainant's competitors in educational testing.
The Panel believes that a transfer of a domain name incorporating not only the Complainant's but also a competitors' trademark requires at least some form of authorization from the competitor, Yahoo! Inc. v. M & A Enterprises, WIPO Case No. D2000-0748.
In Response of the Panel Order requesting the provision of such authorization from the competitor, the Complainant amended its initially requested remedy to that of cancellation.
In accordance with the amended remedy request, the Panel believes that the only fair and reasonable remedy for the disputed domain names and is not the transfer but the cancellation of the same. 8. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names and be cancelled.
Kaya Köklü
Sole Panelist
Dated: June 15, 2010
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